Protecting discoveries

M

ost nations in the world provide a formal system for the protection of ideas. While many
ideas are eligible for protection as both useful and creative, nearly all countries
have different laws to protect the "useful" components and "creative" components of
an idea (as well as commercial branding and secretive information).

These laws grant to owners exclusive rights to an idea – such as the right to use
an invention or the right to copy a creative work. Those who own the idea can use
these rights to deny or limit others, creating a limited monopoly on the idea. Protected
ideas and the associated rights are known as "intellectual property" (IP).

Managing the protection and commercialization of IP is a large part of the TTO’s role
at the university. Making use of intellectual property produced by campus resources
is further complicated by the unique characteristics of university research.

Patents

A patent is an exclusive right to practice an invention. An invention is a potentially
protectable new (or novel), useful, and non-obvious scientific discovery. Patents
are the most well-known intellectual property (IP) used in university technology transfer.
Patents provide the owner the right to exclude others from practicing an invention
for 20 years in exchange for the owner providing a written enabling disclosure of
the claimed invention.

An interesting aspect of intellectual property is that – unlike tangible, physical
property – an idea is only valuable if there is a governing body to enforce those
rights. The "bargain" is that in exchange for sharing how an invention works and advancing
science, governments will grant a limited monopoly to the owners of the invention.
Patents are an integral part of the U.S. economy, and important enough to American
ideals that they are provided in Article 1 of the U.S. Constitution.

Many of the laws related to patenting inventions are in Title 35 of the United States
Code. Section 101 provides that inventors can only obtain patents for processes, machines,
manufactures, compositions of matter, and their improvements. Further sections require
that patentable inventions be new (or novel), useful, and non-obvious. It is important
to note that patents protect only the functional aspects of inventions. Creative ideas are protected by other forms of intellectual
property, such as copyrights.

Patents are obtained by a process called “patent prosecution,” in which the invention
is disclosed to the protecting body (such as the government), and the invention is
rejected, accepted, or argued about between the government the party seeking the patent.
In the United States, the government rejects an invention in an “office action,” after
which the inventors or owners may abandon or amend the claims of the invention. In the United States, a vast majority of patent applications are rejected at least
once for being not new or obvious.

It is important to note that one does not have an enforceable patent until the claims
are granted by the government. Patent applications are merely that – applications
for full-blown enforceable patents. However, owners may still license pending patents
or recover damages for infringement once a patent is granted.

Patents can be very expensive, because of both the filing fees for each country and
the time spent by patent attorneys drafting patent claims and responding to rejections
from the patent office. The cost of patents varies greatly based on the number of
rejections, the countries in which applications are filed, the amount of prior art
in the field, the subject matter or technical area, and the expertise required to
prosecute them.

Because patents are so expensive, the TTO cannot prosecute every potential patent
to issuance.

A provisional patent application notifies the government of a potential invention,
and provides a filing date for an invention. They are temporary, unexamined, and unpublished.
In the United States, a provisional patent application lasts 12 months, at which point
a non-provisional application (either a U.S. non-provisional or Patent Cooperation
Treaty application) must be filed.

Provisional patent applications may be filed relatively affordably, while non-provisional
applications can be extremely expensive.Because of the prohibitive costs of non-provisional applications, the TTO may file
a provisional patent application but allow it to lapse (expire) at the end of the
year unless there is demonstrated commercial potential.

The TTO directs and finances the attainment of patent protection of University-owned
inventions. The TTO can grant a license (permission) to others to use University patents
and pending patents.

Most licensees typically look for patents when deciding whether to license technology,
as patents are well-defined property rights that allow potential users to understand
and evaluate a technology. The TTO negotiates and drafts all licenses for most University-owned
IP.

Contact the TTO if you are a co-inventor on University IP interested in commercializing IP, or a
potential licensee interested in using University IP.

Recently, the America Invents Act (AIA) changed patent law in the United States to
a “first inventor to file” country. So, even if you are the first to make a useful
scientific discovery, someone else can invent and file an application first to obtain
the patent.

The AIA redefined how patent case law will shape the American economy and technology.
Unfortunately, how these sweeping changes impact patent prosecution, licensing, and
infringement are not yet concrete and will not be for years to come, as patent law
traditionally moves slowly.

Yes, software is potentially patentable in the United States as a process. However,
since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, it has become much more challenging to patent software.

Software is also potentially protectable by copyrights, and could be commercialized
by way of a copyright license.

The TTO can help inventors obtain patent protection for University intellectual property.
The TTO directs and finances the attainment of patent protection of University-owned
inventions. The TTO provides other services, such as prior art searches, patentability analyses, market assessments, and commercialization
planning.

Also, it is important to let the TTO know of an invention before public disclosure,
as a public disclosure can bar patent rights in most countries.

SDSU faculty are required to disclose inventions produced with institutional support
or in the area of their employment by the terms of their employment, Faculty Senate
policy, the terms of receiving funding from the Research Foundation, federal regulations, and
the terms of federal agency grants.

The Research Foundation shares royalties with University inventors according to University
Royalty Sharing Guidelines, which provide for a 50-50 split of net royalties between
inventors and University entities.

The general rule is that the Research Foundation owns inventions produced with “significant
institutional support.” Ownership of inventions disclosed to the TTO is determined
by the University Copyrights & Patents Committee, a group of faculty and staff peers. The UCPC usually meets on the first Tuesday of
every month.

The TTO does not own or manage inventions created by students unless they are related
to faculty research or produced with significant institutional support.

Intellectual Property produced through sponsored research administered by the Foundation
is assigned to the Foundation to comply with federal law and adhere to best practices.
Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.

Inventors should disclose an invention to the TTO when an invention is created through
University research or using institutional resources.

Faculty inventors should disclose a potentially patentable invention to the TTO as
soon as possible before an imminent public disclosure, such as a publication or presentation
at a conference. This is necessary because a public disclosure acts as a bar to patenting in most
countries, and triggers a one-year window to file a patent application in the United
States.

The TTO can, if necessary, evaluate patentability and whether filing a patent is necessary
in advance of a public disclosure. The TTO ordinarily requests 30 days in advance
of a public disclosure to properly evaluate and attend to filing a patent application
for an invention. Contact the TTO with questions regarding patentability and public disclosures of University inventions.
Disclose inventions here.

Copyrights

A copyright is a form of intellectual property that protects uses of creative ideas,
in particular reproducing (or “copying”) the expression. Not everything is copyrightable:
but virtually any type of creative expression can be protected as long as it has “a
modicum of originality.”

There is no exhaustive list of what can be protected by copyrights, but examples include
literary works (books, novels, screenplays, manuscripts, computer code), musical works,
dramatic works, pictorial works, sculptural works, and even other expression such
as architectural works and fashion designs. The key to copyright law is creative expression.

Any creative expression is afforded copyright protection as soon as it is first rendered
in a tangible medium. For example, a blog post is instantly copyright-protected upon
posting, and elements of a novel are copyright-protected once the author puts pen
to paper.

Although everything copyrightable is protected upon publication, claimed protection
can be overcome upon a showing that the idea is unoriginal.

Authors and owners may register a copyright, although there are few reasons to do
so. Copyright registration does not provide sufficient benefits to justify registration
of all University copyrights, though it may be warranted in some circumstances.

The TTO handles protection for intellectual property produced through research and
significant institutional support, including the management of copyrights. The TTO
can grant a license (permission) to others to use University copyrights and copyright-protected
material. The TTO negotiates and drafts licenses for most University-owned copyrights.

Contact the TTO if you are a co-author on University IP interested in commercializing IP, or a potential
licensee interested in using University IP.

One of the major advantages of copyrights are that protection is automatic upon publication.
For this reason, a public disclosure is not a bar to rights like it is for patentable
inventions.

Maintaining protection of copyrighted work is also much less expensive than patent
protection, since registration is not required. Finally, copyrights last a very long
time: for the length of the last surviving author plus 70 years.

The TTO can help authors manage copyrights for University intellectual property. The
TTO provides important services related to copyrights, such as market assessments
and commercialization planning. Many ideas are protectable by patent rights and copyrights,
and the TTO can evaluate the patentability of creations that may be protectable by
both forms of intellectual property.

SDSU faculty are required to disclose copyrightable works produced with institutional
support or in the area of their employment by the terms of their employment, Faculty
Senate policy, the terms of receiving funding from the Research Foundation, federal
regulations, or the terms of federal agency grants. The Research Foundation shares
royalties with University inventors according to University Royalty Sharing Guidelines,
which currently provide for a 50-50 split of net royalties between inventors and University
institutions.

Intellectual Property produced through sponsored research administered by the Foundation
is assigned to the Foundation to comply with federal law and adhere to best practices.
Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.

No. The general rule of thumb is that the Research Foundation owns creative works
produced with “significant institutional support.” There are also significant carve-outs
for some “traditional scholarly works,” which do not need to be disclosed to the TTO.

While some software may be patentable, software can also be protected by copyright
law. Copyright law protects the creative expression in a program or the body of code.
The actual code is an idea fixed in a tangible medium. New versions or add-ons to
that software are generally considered derivatives of the original.

Some software might also be patentable because of what it does or what it produces,
which means software can have multiple types of protection. But patenting software
has become very challenging, especially in light of the Supreme Court’s decision in
Alice Corp. v. CLS Bank International. As such, copyright protection for code is often
sufficient or prudent given the expense of pursuing a patent that may never issue.

The TTO can also help faculty with open source licenses of University-owned software.
Contact the TTO with questions on copyright protection of software and open source
licenses.

Trademarks

A trademark is a form of intellectual property identifying the source of a product
or service to consumers. A trademark allows the owner to prevent others from making
use of that mark. Trademarks are important because they protect consumers by allowing
the consumer to trust the source of an item, and not be fooled by phony imposter goods
or services.

Probably the most famous existing university license is for a trademark — Gatorade
is primarily a trademark license from the University of Florida. Trademarks are valuable
for a good reason: they may never expire. As long as a mark continues to be used in
the stream of commerce and the owner pays the requisite fees, a mark can continue
in perpetuity.

For a university, technology transfer for trademarks has two distinct avenues. First,
the university might have lines of products around the university’s name and identity.
The TTO is not the responsible party for SDSU’s Aztec identity and related marks.
For questions about the SDSU or Aztec identity, please contact Aztec Shops.

Second, the University can trade on faculty and departments within SDSU that develop
projects that build recognition over time. As these projects develop and create notoriety,
brand loyalty, and a discernible reputation in communities, trademarks become valuable
to help define the products and services related to these SDSU projects.

A successful example of this avenue to trademark commercialization is SDSU’s eCHECKUP
TO GO trademark — it identifies the University’s product so that users can be certain
that they are receiving the reputable alcohol awareness and other intervention prevention
programs developed at SDSU by its faculty.

Trade Secrets

A trade secret is a form of intellectual property that protects information with economic
value because of its concealment if it is kept secret by reasonable security measures.
In order to be a trade secret, the information has to be safeguarded as confidential
in the normal course of business. The secret formula for the world’s largest soft
drink, your grandmother’s cookie recipe, and a customer list for an existing company
are all potential trade secrets.

There are a variety of ways a trade secret owner can maintain protection of a trade
secret. Two common mechanisms to protect trade secret are Confidential Disclosure
Agreements (CDAs) otherwise known as Non-Disclosure Agreements (NDAs), or employment
agreements that require employees to keep certain information secret.

The key is that the trade secret owner take steps to keep the information secret,
and that they not publicly disclose the information (unlike patents).

The advantages of trade secrets are that they can be kept concealed in perpetuity,
and it is illegal in most jurisdictions to circumvent the security measures protecting
the information.

The disadvantages of trade secrets include that there is nothing in the law preventing
reverse engineering of an innovation or recipe. For example, if a company sells the
desired soft drink, a competitor can buy it, analyze it, and replicate what it believes
is the exact same product— and the owner of the trade secret will have no claim of
impropriety.

This is why it is often much more attractive to file for patent protection to protect
an invention, as opposed to relying on trade secret protection. A product can never
be a trade secret and simultaneously be patented; one either keeps the invention a
secret or seeks a patent and provides a written enabling description that is disclosed
to the public in exchange for legal protection.

Trade secrets also require efforts to maintain the secrecy of the protected information.
It is often impractical to protect trade secrets at public institutions given the
desire to publicize information and the difficulties in concealing some information.

Given the difficulties, requirements, and missions of public institutions, commercializing
trade secrets is often impractical at state universities.

However, the University may protect trade secrets of commercial partners under narrow
circumstances. One of the key tools for trade secret protection is the confidential
disclosure agreement (also known as a confidentiality agreement or non-disclosure
agreement). These agreements protect secrets revealed to outsiders so that the company
can retain the value of their secrets.

The TTO manages and signs CDAs and NDAs related to research on behalf of the Foundation.
Contact the TTO for help with a CDA to protect either your own information or protect
another party’s in relation to University research or commercial discussions.

Data can still be protected in a variety of ways, even if it is not its own form of
intellectual property.

For instance, data can be protected as a trade secret (read above for more information
on trade secrets).

Data can also be protected as "proprietary" or "confidential" information by contract,
such as through a confidential disclosure agreement (CDA) or non-disclosure agreement
(NDA). The TTO is responsible for handling all CDAs related to research or the commercialization
of IP at SDSU.

Have questions about CDAs or NDAs, or need one to share with another party? Read more
about TTO services here or contact the TTO.

Furthermore, terms of use can limit how those accessing a database use the data it
contains by way of a contract with the user. For instance, the creator of a dataset
may require users agree to provide attribution to the data holder if reused, or have
the user agree to only use the data for research or non-commercial purposes.

Copyright law can protect compilations of data and databases thinly — to the extent
that creative choices were made such as what data is included, how the data is organized,
how it is stored, how it is shared, what the display of that data looks like, and
other creative choices.

However, this does not protect individual components of the underlying data itself.
Thus, copyright protection for data is very limited in the U.S.